Trials@uspto.gov
`572-272-7822
`
`
`
`
`
`
`Paper 147
`Entered: September 29, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ILLUMINA, INC.
`Petitioner,
`V.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
`
`Case IPR2012-00007
`US Patent 7,790,869
`_______
`
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`
`DECISION
`Miscellaneous Motion
`37 C.F.R. § 42.56
`
`
`
`
`
`
`572-272-7822
`
`
`
`
`
`
`Paper 147
`Entered: September 29, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ILLUMINA, INC.
`Petitioner,
`V.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
`
`Case IPR2012-00007
`US Patent 7,790,869
`_______
`
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`
`DECISION
`Miscellaneous Motion
`37 C.F.R. § 42.56
`
`
`
`
`
`
`
`Case IPR2012-00007
`US Patent 7,790,869
`
`
`I. Introduction
`
`On Friday 26 September 2014, Columbia counsel contacted the Board via email
`
`
`
`inquiring as to “how to expedite unsealing certain confidential documents in
`
`connection to their use in the Federal Circuit appeal briefs”. The parties indicated
`
`that “[b]riefing is due on Monday 9/29.” (See attached email communication
`
`appearing to have been sent at 10:15 am on 26 September 2014).1 A later email
`
`states that:
`
`Pursuant to the Patent Owner’s earlier e-mail to the Board
`regarding unsealing confidential exhibits, the Parties have reached an
`agreement that portions of the record no longer contain confidential
`information. The Parties therefore jointly request that the following
`sealed exhibits be made public: 2054, 2065-2070, and 2072-2087
`[listed exhibits].
`
`
`(See attached email communication appearing to have been sent at 11:00 am on
`
`26 September 2014 (Request)).
`
`Communications from Illumina counsel via email confirm that the request to
`
`make public the sealed versions of the listed exhibits is a joint request. (See
`
`
`1 While we are able to accommodate the parties in the case, it is not a good
`practice to wait until just prior to a due date to seek relief as the Board needs a
`reasonably sufficient time to consider issues put before it.
`2
`
`
`
`
`
`Case IPR2012-00007
`US Patent 7,790,869
`
`attached email communications appearing to have been sent at 12:12pm and
`
`1:51pm on 26 September 2014).
`
`II. Discussion
`
`The parties were authorized to file certain Exhibits under seal. As to those
`
`certain Exhibits, each was filed as an “under seal” and “public” version. The
`
`parties have agreed that the listed Exhibits no longer contain confidential
`
`information and that the under seal versions of these Exhibits may be made public.
`
`
`
`There is a strong public interest in making the record of the proceeding open
`
`to the public as the proceeding affects the rights of the public by determining
`
`whether a party has a right to its patent. Accordingly, we grant the Request as its
`
`grant makes further information available to the public. We understand that
`
`judicial review of our decision has been sought (See Notice of Appeal, Paper 146)
`
`but we view making the listed Exhibits public as a purely ministerial act that is
`
`reasonable in the present circumstances.2
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2012-00007
`US Patent 7,790,869
`
`
`III.
`
`Order
`
`It is
`
` ORDERED that the under seal versions of the following exhibits shall be
`
`made publically available:
`
`Exhibits 2054, 2065-2070, and 2072-2087.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`See Loshbough v. Allen, 359 F.2d 910, 912 (CCPA 1966) (stating that the
`2
`Board may “exercise a purely ministerial function in their administrative capacity”
`despite a notice of appeal).
`
`
`
`4
`
`
`
`Case IPR2012-00007
`US Patent 7,790,869
`
`
`
`PETITIONER:
`
`Robert Lawler
`illuminaiprs@reinhartlaw.com
`
`James Morrow
`illuminaiprs@reinhartlaw.com
`
`
`PATENT OWNER:
`
`John White
`jwhite@cooperdunham.com
`
`Anthony Zupcic
`ColumbiaIPR@fchs.com
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`Attachment 1
`Attachment 1
`
`
`
`
`
`From: Zupcic,Anthony [mailto:AZupcic@fchs.com]
`Sent: Friday, September 26, 2014 10:15 AM
`To: Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; Illumina; J. Costakos; John White; uspto
`Subject: IPRs 2012-00006, 2012-00007, and 2013-00011
`
`The Parties in the subject IPRs request a telephone conference with one or more APJs Lane,
`Lebovitz or Katz to discuss how to expedite unsealing certain confidential documents in
`connection to their use in the Federal Circuit appeal briefs. Briefing is due on Monday 9/29.
`
`Both Parties are available for teleconference anytime today, preferably before 1pm Eastern Time.
`
`Respectfully submitted,
`
`Anthony M. Zupcic
`Back-Up Counsel for Columbia University
`
`Anthony M. Zupcic
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2240
`F 212-218-2200
`AZupcic@fchs.com
`http://www.fitzpatrickcella.com
`Bio
`
`
`
`---------------------------------------------------------------------------
`This email message and any attachments are intended for the use of the
`addressee(s)indicated above. Information that is privileged or otherwise
`confidential may be contained therein. If you are not the intended
`recipient(s),
`you are hereby notified that any dissemination, review or use of this
`message,
`documents or information contained therein is strictly prohibited. If you
`have
`received this message in error, please immediately delete it and notify us by
`telephone at (212) 218-2100. Thank you.
`
`
`
`
`
`
`
`
`
`Attachment 2
`Attachment 2
`
`
`
`From: Zupcic,Anthony [mailto:AZupcic@fchs.com]
`Sent: Friday, September 26, 2014 12:00 PM
`To: Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; Illumina; J. Costakos; John White; uspto
`Subject: FW: IPRs 2012-00006, 2012-00007, and 2013-00011
`
`Pursuant to the Patent Owner’s earlier e-mail to the Board regarding unsealing confidential
`exhibits, the Parties have reached an agreement that portions of the record no longer contain
`confidential information. The Parties therefore jointly request that the following sealed exhibits
`be made public: 2054, 2065-2070, and 2072-2087. The Parties request guidance on filing copies
`of the formerly sealed exhibits to replace the current public exhibits, if deemed necessary by the
`Board.
`
`
`Respectfully submitted,
`
`Anthony M. Zupcic
`Back-Up Counsel for Columbia University
`
`Anthony M. Zupcic
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2240
`F 212-218-2200
`AZupcic@fchs.com
`http://www.fitzpatrickcella.com
`Bio
`
`
`
`
`
`
`
`
`
`
`Attachment 3
`Attachment 3
`
`
`
`From: Robert A. Lawler [mailto:RLawler@reinhartlaw.com]
`Sent: Friday, September 26, 2014 12:12 PM
`To: 'Zupcic,Anthony'; Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; IlluminaIPRS; J. Costakos; John White
`Subject: RE: IPRs 2012-00006, 2012-00007, and 2013-00011
`
`Counsel for Petitioner Illumina hereby confirms that the request below is made jointly by the Parties.
`
`Respectfully submitted,
`
`Counsel for Petitioner Illumina, Inc.,
`
`Robert A. Lawler
`Reinhart Boerner Van Deuren s.c.
`22 East Mifflin Street, Suite 600 | Madison, WI 53703
`Office: 608-229-2217 | Cell: 608-609-7379 | Fax: 608-229-2100
`rlawler@reinhartlaw.com | bio | vCard | reinhartlaw.com
`Legal Secretary: Janet Strizic | 608-229-2267 | jstrizic@reinhartlaw.com
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Attachment 4
`Attachment 4
`
`
`
`From: Robert A. Lawler [mailto:RLawler@reinhartlaw.com]
`Sent: Friday, September 26, 2014 1:51 PM
`To: Trials; 'Zupcic,Anthony'
`Cc: A Selikson; ColumbiaIPR; G Gershik; IlluminaIPRS; J. Costakos; John White; uspto
`Subject: RE: IPRs 2012-00006, 2012-00007, and 2013-00011
`
`Ms. Vignone,
`
`Per the attached emails, Illumina believes that the parties are in agreement that Exs. 2054, 2065-70, and
`2072-87 in IPRs 2012-00006, 2012-00007, and 2013-00011 can be unsealed.
`
`Thank you for your attention to this matter.
`
`Regards,
`
`Counsel for Petitioner Illumina, Inc.
`
`Robert A. Lawler
`Reinhart Boerner Van Deuren s.c.
`22 East Mifflin Street, Suite 600 | Madison, WI 53703
`Office: 608-229-2217 | Cell: 608-609-7379 | Fax: 608-229-2100
`rlawler@reinhartlaw.com | bio | vCard | reinhartlaw.com
`Legal Secretary: Janet Strizic | 608-229-2267 | jstrizic@reinhartlaw.com
`
`
`
`
`
`
`
`
`From: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Friday, September 26, 2014 12:46 PM
`To: 'Zupcic,Anthony'; Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; IlluminaIPRS; J. Costakos; John White; uspto
`Subject: RE: IPRs 2012-00006, 2012-00007, and 2013-00011
`
`Counsel: Are both parties in agreement about which documents you want to unseal?
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`
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